Monday, February 03, 2014

Applying the "Ordinary-Meaning" test, the Board affirmed a refusal to register the mark FIAT 500 for "retail store services and on-line retail store services featuring a wide variety of consumer goods of others," in International Class 35, on the ground that the proposed wording exceeded the scope of the original recitation of services ("advertising services; business management; business administration; office functions"). Although the proposed language itself would fall within Class 35, the Board ruled, it is not encompassed by the original recitation of services even though the original recitation is identical to the class heading for Class 35. In re Fiat Group Marketing & Corporate Communications S.p.A., 109 USPQ2d 1593 (TTAB 2014) [precedential].

Trademark Rule 2.71(a) permits an applicant to "amend the application to clarify or limit, but not to broaden, the identification of goods and/or services." According to the "Ordinary-Meaning" Test of TMEP Section 1407.07(a), the PTO will "look to the ordinary meaning of the words for the purposes of determining the scope of the identification." The applicant is not allowed to amend the application "to include any item that falls in the class, unless the item falls within the ordinary meaning of the words in the heading ...." Examining Attorney Janice McMorrow maintained that the proposed wording "is beyond the scope of the identification because the initial application did not list any store services of any kind, nor any services which would encompass them ...."

Thus, the essential question or issue on appeal is whether the language of the Class 35 heading encompasses retail store services such that applicant's amendment is in compliance with Rule 2.71(a). The question is not, contrary to applicant’s argument discussed below, whether the scope of Class 35, as shown by the listing of services that fall within it, encompasses the services in applicant’s proposed amendment.

Applicant Fiat contended that "retail services are definitely included under the umbrella of business management services" because "[o]perating a retail store and offering such services is [sic] a business services and involve the management of the business." In response, the Examining Attorney provided a dictionary definition of "business management" that did not "simply refer to any activity a ‘business’ undertakes, e.g., retail store services, it refers to applying management techniques within a business to achieve success." To the extent that Fiat manages its own retail stores, that it not a service performed for others but rather is incidental to any business.

Finding no support in the record for Fiat's assertion that the meaning of the term "business management" includes "operating a retail store," the Board agreed with the Examining Attorney that the proposed amendment violated Rule 2.71(a) because it improperly broadened the recitation of services: "The term 'business management,' as well as the other terms in the International Class 35 heading, cannot be construed as encompassing retail store services."

We see no error in the examining attorney’s reliance on [TMEP Section 1407.07(a)] nor do we see any reason to deviate from the Office’s clear and publically-stated policy. Consideration of the 'ordinary meaning' of wording in any identification of goods or services when attempting to define the scope of an identification is pragmatic and encourages consistent interpretation of various terms.

Pointing to TMEP Section 1402.02, Fiat likened its recitation of an entire International Class heading to an application that includes language claiming "all of" the goods or services within a particular international class," i.e., where the applicant is claiming all of the goods or services in that class as defined by the WIPO International Classification manual. However Section 1402.02 merely states that in each of these situations, the PTO will accord a filing date, but will require an amendment of the goods or services.

To be clear, while class headings are allowed in international registrations, and the USPTO will accord a filing date to a USPTO application seeking extension of protection to an international registration that uses a class heading as an identification of goods or services, use of the words comprising a class heading as an identification in an application filed with the USPTO is not deemed to include all the goods or services in the established scope of that class.

Finally, Fiat pointed to the "class heading covers all" policy adopted by some Madrid Protocol or Madrid Agreement countries, "interpreting the scope of an international class heading in an application or registration as encompassing the entire alphabetical list of acceptable goods or services for that class." The Board, however, observed that although some applicants from those countries may mistakenly believe that such an application may later be amended to identify any of the listed goods or services within the international class, "no provision in U.S. law or any obligation by treaty obliges the USPTO to deviate from or make an exception to its longstanding practice governing the scope and interpretation of identifications and in deciding what amendments are permissible."

And so the Board affirmed the refusal to register the mark as to "retail store services and on-line retail store services featuring a wide variety of consumer goods of others."

TTABlog note: If the original recitation of services in Fiat's Section 66(a) application (and the IR) had included the language "and all other services in Class 35," would the amendment to include retail services have been acceptable? TMEP 1402.02 points out that such an amendment may raise another problem: a Section 66(a) applicant must verify that it is either using the mark in commerce with the identified goods and services, or has a bona fide intention to do so. "If an applicant claims use or asserts a bona fide intention to use the mark on all goods/services in a particular class but only uses or intends to use the mark on some of those goods/services, the registration that results could be void. In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009); Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)."

More interesting case than I'd initially given it credit. Fiat spent quite a bit of money on this one but there is a realistic concern when dealing with multinational companies that the class headings should cover every single description within a class (putting aside the ITU concerns). Certainly makes application strategy a lot easier.

It'll be pretty near impossible for Fiat to show that it's providing "advertising services" to any third parties in the next 5 years so that will likely die off. I suppose the takeaway is that international companies either need to consider early whether they'll be extending to the US or ensure that they've restricted their class heading registrations in foreign jurisdictions to include something protectible in the States before extending through Madrid